Kabushiki Kaisha Tenga v. Ashantiplc Limited

Case No. D2009-0422

1. The Parties

The Respondent is Ashantiplc Limited, Hong Kong SAR of China, represented by John Berryhill, United States of America.

2. The Domain Name and Registrar

The disputed domain name <tenga.com> is registered with Backslap Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2009. On April 2, 2009, the Center transmitted by email to Backslap Domains, Inc. a request for registrar verification in connection with the disputed domain name. On April 6, 2009, following an additional communication from the Center, Backslap Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and disclosing registrant and contact information for the disputed domain name which differed from the respondent named, and the contact information provided, in the Complaint. The Center sent an email communication to the Complainant on April 8, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 13, 2009. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2009. The Response was filed with the Center on May 12, 2009.

The Center appointed Andrew Frederick Christie as the sole panelist in this matter on May 20, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On June 1, 2009 the Panel issued an Administrative Panel Procedural Order, pursuant to the Rules, paragraph 12. This Order invited the Complainant to provide concise answers (and, where appropriate, evidence supporting those answers) in response to two questions: (i) when did the Complainant's alleged trademark rights in the trademark TENGA arise? and (ii) when did the Respondent register the disputed domain name? The Complainant provided answers and evidence in support on June 3, 2009. The Respondent, pursuant to an invitation to do so contained in the Order, provided observations on the Complainant's answers on June 8, 2009.

4. Factual Background

The Complainant was established on March 25, 2005. Its principal place of business is Tokyo, Japan. Its business is manufacturing and distributing worldwide ‘adult toys' – more specifically, devices used for masturbation of human males. Research and development of these products commenced in 2002, by the founder of the Complainant, Mr Matsumoto.

The Complainant is the owner of trademark registrations that include the word TENGA in Australia, the European Community, Hong Kong, Norway, Republic of Korea, Russia, Sinagapore, Switzerland, United States of America and Vietnam. The earliest of these registrations is stated by the Complainant to be April 2, 2007. The registrations are in classes 9 (exposed cinematograph and slied films; recorded video discs and video tapes) and 10 (medical machines and apparatus; electric vibrator massage apparatus; sexual intercourse auxiliary devices; masturbation auxiliary devices). The registrations consist of the word TENGA in Roman characters, together with Japanese characters the transliteration of which is “tenga” and the English translation of which is refinement or elegance.

The Complainant has more 130 staff, and has sold over 5 million of its devices worldwide through its 10 international distributors. The Complainant owns the domain name <tenga.co.jp>, and uses this as the URL for a website that has received more than 32 million hits since establishment of its business. It owns similar domains in a number of other countries.

The Respondent operates a paid Internet search system at the URL “http://www.tenga.com”. The webpage at that address does not contain links to masturbation devices. The Complainant asserted that a search using the term “tenga” conducted at the Respondent's website would return results of other websites offering TENGA products for sale. The Respondent did not deny this fact, but disputed the interpretation placed on this by the Complainant.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights, because the disputed domain name is an “identical replication” of the Complainant's trading name, brand and protected trademark TENGA.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, because the Respondent is not associated with the Complainant, is not known by the name TENGA, and has not been given permission to use the word TENGA by the Complainant.

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith, because it is using the domain name as a URL for a paid Internet search website that generates sponsored links to sites offering goods manufactured by the Complainant. The Respondent is, therefore, generating income by using the Complainant's trademark and by confusing the public. Furthermore, the Respondent has “gone to great levels to conceal [its] identity”, through the use of a privacy shield service.

B. Respondent

The Respondent contends that the disputed domain name is neither identical with nor confusingly similar to the Complainant's trademark, because the trademark is a compound mark that contains both Roman characters and Japanese characters while the disputed domain name contains only Roman characters.

The Respondent contends that it has a legitimate right or interest in the domain name, because the word “tenga” is both the first person subjunctive and the third person imperative form of the Spanish verb “tener” – to have. The word “tenga” is thus a command in the Spanish language, roughly translating as “take (it)”, “go get (it)” or “I shall have (it)”. The word “tenga” is, therefore, a relevant and appropriate word to have in a domain name that is used as a URL for an Internet search site.

The Respondent contends that it did not register the disputed domain name in bad faith, because it registered the domain name prior to the Complainant acquiring rights in the trademark on which the Complaint is based, and so the Respondent could not have been aware of the Complainant's interest in the domain name at the time of registration. Further, the Respondent contends it is not using the domain name in bad faith, because the website for which the domain name is a URL does not provide links to products that compete with the Complainant's products. The use of a privacy shield service does not evidence bad faith, because such services are lawful and, in any event, the Respondent has not evaded identification as the registrant of the disputed domain name.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established that it owns trademark registrations that contain the word TENGA in Roman characters, together with Japanese characters the transliteration of which is “tenga”. The disputed domain name is confusing similar to the Complainant's trademark. The relevant part of the domain name, <tenga>, is identical to that part of the Complainant's trademark that is in Roman characters. The fact that the Complainant's trademark contains an additional component (in Japanese characters) means that the domain name is not identical to the whole of the Complainant's trademark. However, the domain name's identity with the Roman character component of the trademark means that the domain name is confusingly similar to the trademark. The inclusion of the Japanese characters in the Complainant's registered trademark does not dispel the confusion that is generated by virtue of the disputed domain name consisting of Roman characters that are identical to the Roman characters in the Complainant's trademark.

B. Rights or Legitimate Interests

The Complainant has contended, and the Respondent has not denied, that the Respondent is not licensed or otherwise authorized by the Complainant to use the trademark TENGA. However, the Respondent claims that it has a right or legitimate interest in the disputed domain name, because it is a generic word in the Spanish language that is suitable for the use to which the Respondent puts the domain name, namely as a URL for an Internet search website. The Respondent has provided evidence that it is in the business of registering generic Spanish words as domain names.

The Overview of WIPO Panel Views on Selected UDRP Questions (“Overview”), paragraph 2.2, recognizes that the mere fact that a domain name consists of a generic word does not mean that the respondent has a legitimate interest in it. According to the Overview, the factors that a panel should consider when determining if the respondent has a legitimate interest in the domain name include “the status and fame of the complainant's trademark, whether the respondent has registered other generic names, and what the domain name is used for”. The application of these factors to this case weighs against the Complainant's claim that the Respondent does not have a legitimate interest in the disputed domain name. The Complainant did not make any express assertion to the effect that its trademark had an unusual degree of fame. Based on the limited information provided by the Complainant (the number of units of product sold under the trademark since establishment of its business), it is not possible for this Panel to conclude that the Complainant's trademark has an unusual degree of fame. The Respondent has registered other generic (Spanish language) words as domain names, and has used the disputed domain name for a purpose for which it has some degree of plausible relevance. Although the Respondent's argument is not totally convincing – there is, for example, no explanation of why the search website is in English rather than Spanish – the combined effect of these factors is to lead this Panel to the view that, on balance, the Complainant has not discharged its burden of proving that the Respondent does not have a right or legitimate interest in the disputed domain name.

C. Registered and Used in Bad Faith

The Respondent claims that the Policy, paragraph 4(a)(iii), requirement of bad faith can never be found when, as in this case, the disputed domain name was registered before the date of the Complainant's earliest trademark registration. However, this approach to the issue is too simplistic. As the Overview, paragraph 3.1, recognizes, there can be bad faith on the part of the respondent even when the domain name is registered prior to the complainant's trademark registration. This could arise, for example, when the respondent is clearly aware of the complainant and the aim of the registration is to take advantage of confusion between the domain name and any future trademark rights of the complainant. There are, no doubt, other situations where bad faith may be found despite the domain name registration occurring prior to trademark rights arising.

In this case, however, the Complainant has not discharged its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith. In response to the first question posed in the Procedural Order, the Complainant asserted that its trademark rights arose on April 2, 2007, the date of its earliest trademark registration. It did not assert that these rights arose at any earlier date. It did not, for example, assert that there was such a substantial use of the mark TENGA prior to its registration that a significant reputation in the mark was developed, giving rise to unregistered trademark rights. In response to the second question posed in the Procedural Order, the Complainant asserted that the Respondent registered the domain name on August 9, 2000. In its observations on the Complainant's reply to the Procedural Order question, the Respondent stated that it registered the domain name significantly later, in early August 2006. A later date of registration is unfavorable to the Respondent's case (because it puts the registration closer in time to the date on which the Complainant asserts the commencement of its trademark rights), but in any event this Panel will assume that the Respondent's own assertion about the date of registration of the disputed domain name is correct. But of itself, this is not dispositive of the matter here; it does not prove that the Respondent knew of and intended to target the Complainant's trademark.

The Complainant asserts that “over the past four years the Respondent must have grown familiar with the Complainant's brand and company”. It is certainly possible that the Respondent was aware of the Complainant and its business when the Respondent registered the disputed domain name in August 2006. However, a mere possibility is not enough – the Complainant needs to discharge its burden of showing that the Respondent has acted in bad faith. The fact that the disputed domain name was registered before the date on which the Complainant asserts its trademark rights arose, although not determinative of the issue, does weigh against the Complainant's assertion that the Respondent “must have” known of the Complainant's mark when it registered the domain name. When this fact is combined with the fact that the Respondent has made a plausible (albeit not totally convincing) claim to a right or legitimate interest in the disputed domain name, it is clear that the Complainant has not discharged its burden of showing that the Respondent registered and is using the domain name in bad faith.